Deckers Outdoor Corp v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Deckers Outdoor Corporation (Delaware / California)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction Unknown)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:23-cv-03888, N.D. Ill., 06/20/2023
• Venue Allegations: Venue is alleged based on Defendants targeting business activities and sales to consumers in Illinois through interactive e-commerce stores.
• Core Dispute: Plaintiff alleges that numerous, unidentified e-commerce operators are infringing its design patent covering an ornamental design for footwear.
• Technical Context: The technology at issue is the ornamental design of consumer footwear, specifically a plush, two-strap open-toed sandal style associated with Plaintiff's UGG brand.
• Key Procedural History: The complaint is structured as a "Schedule A" action, a legal strategy often used to combat diffuse online infringement by numerous anonymous parties, who are frequently located abroad. No prior litigation involving the patent-in-suit or these specific Defendants is mentioned.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D901,870 - FOOTWEAR UPPER AND MIDSOLE

• Issued: November 17, 2020

The Invention Explained

• Problem Addressed: Design patents protect new, original, and ornamental designs for an article of manufacture rather than solving a functional problem. This patent seeks to protect a specific aesthetic appearance for footwear (Compl. ¶7).
• The Patented Solution: The patent claims the specific ornamental design for a footwear upper and midsole, characterized visually by a thick, platform-style midsole with rounded edges and two wide, parallel straps across the instep that have a plush or fleecy surface texture (’870 Patent, FIGS. 1-6). The scope of the design is strictly limited to the elements depicted in solid lines; features shown in broken lines, such as the outsole tread and the rear elastic strap, are explicitly not part of the claimed design and serve only to show environment (’870 Patent, Description).
• Technical Importance: The complaint alleges that UGG branded products are "iconic" and that their distinctive designs are broadly recognized by consumers and associated with quality (Compl. ¶¶ 6-7).

Key Claims at a Glance

• The patent asserts a single claim: "The ornamental design for a footwear upper and midsole, as shown and described" (’870 Patent, Claim).
• The essential visual elements of this single claim, as depicted in the patent's figures, include:
  • The overall visual impression of an open-toed sandal.
  • A thick, continuous midsole with a rounded perimeter.
  • Two wide straps positioned over the instep.
  • A surface texture on the straps and midsole edge suggesting a plush or fabric material.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear products, referred to as the "Infringing Products," which are allegedly unauthorized and unlicensed products sold by Defendants (Compl. ¶3).

Functionality and Market Context

The complaint alleges Defendants operate e-commerce stores under various "Seller Aliases" to sell footwear that copies the patented "UGG Design" (Compl. ¶¶ 3, 20). These online stores are allegedly designed to appear as though they are authorized retailers, targeting "unknowing consumers" in the United States, including Illinois (Compl. ¶¶ 3, 13-14). The complaint provides a table of images from the ’870 Patent to represent the "UGG Design" that is allegedly infringed (Compl. p. 4). This table of patent figures, showing the sandal from various angles, serves as the complaint's primary visual representation of the design at issue (Compl. p. 4).

IV. Analysis of Infringement Allegations

D901,870 Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question in design patent cases is the scope of the claim as a whole. The analysis will focus on the overall visual impression created by the features shown in solid lines. A point of contention may be the extent to which the accused designs can differ in proportion or minor detail from the patent drawings and still be considered "substantially the same" to an ordinary observer.
• Technical Questions: The infringement test is not technical but visual. The key question for the court will be whether an "ordinary observer," familiar with prior art designs, would be deceived into purchasing an accused product believing it is the patented design. This requires a side-by-side comparison of the actual accused products (once identified) and the patent's drawings. The complaint's allegation of infringement rests on the assertion that the "Infringing Products" create the same overall visual impression as the patented design (Compl. ¶¶ 24-25).

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction of words is rare, as the claim is defined by the drawings. The analysis focuses on the overall visual appearance.

• The Term: "The ornamental design for a footwear upper and midsole, as shown and described"
• Context and Importance: This phrase constitutes the entirety of the claim. Its interpretation is not about defining words, but about establishing the scope of the protected design as a whole, which is the central issue of the infringement analysis. The dispute will turn on the visual comparison between this claimed design and the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party may argue that the claim covers the overall visual impression of a plush, two-strap, thick-soled sandal, and that minor variations in proportion or texture do not defeat infringement so long as the overall aesthetic is the same. The use of multiple figures showing the design from various angles could support the idea that the claim protects a holistic design concept rather than a single, fixed view (’870 Patent, FIGS. 1-7).
  • Evidence for a Narrower Interpretation: A party may argue the design is strictly limited to the exact shapes, proportions, and surface appearances shown in the drawings. The most significant narrowing evidence is the patent’s explicit disclaimer of all elements shown in broken lines, which "form no part of the claimed design" (’870 Patent, Description). This prevents the patentee from claiming infringement based on features like the rear elastic strap or the specific pattern on the bottom of the sole.

VI. Other Allegations

Indirect Infringement

The complaint alleges Defendants infringe "directly and/or indirectly" and asks for an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. ¶¶ 24, 11(b)). The factual support points to allegations that the unknown Defendants operate as an interrelated network, "working in active concert" and sharing tactics, which may form the basis for a theory of induced or contributory infringement among the seller network (Compl. ¶¶ 17-18, 20).

Willful Infringement

The complaint alleges that infringement was willful based on Defendants "knowingly and willfully" manufacturing and selling the infringing products (Compl. ¶¶ 20-21). The pleading does not allege pre-suit notice to these specific Defendants, which is consistent with the complaint's purpose of first identifying the anonymous infringers.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of visual comparison: Under the "ordinary observer" test, are the ornamental designs of the accused products, once identified and presented to the court, "substantially the same" as the specific design claimed in the ’870 patent, considering the design as a whole?
• A key question of claim scope will be the impact of the disclaimed subject matter. The analysis will require carefully separating the claimed features (solid lines) from the unclaimed environmental context (broken lines), such as the rear strap, to ensure the infringement comparison is based only on the protected design.
• The case presents a significant procedural and enforcement challenge: Can the Plaintiff successfully identify the anonymous foreign Defendants, establish personal jurisdiction, and practically enforce a potential judgment against a diffuse network of online sellers who allegedly use tactics to conceal their identities and assets? (Compl. ¶¶ 10, 16, 19).